Summary
- DeLorean brand owner said NBCU failed to pay royalties for merchandise, tie-ins
- Brand owner can pursue infringement claims at trial, court says
(Reuters) – NBCUniversal [RIC:RIC:CMCSAN.UL] lost a bid in California federal court on Thursday to defeat a trademark lawsuit over its use of the iconic DeLorean from “Back to the Future” on merchandise and tie-ins for the film series.
NBCU failed to convince U.S. District Judge David Carter that it did not infringe DeLorean Motor Co’s trademarks, paving the way for a trial on the trademark claims. Carter ruled that DeLorean lacked standing to claim that NBCU broke its 1989 contract with the carmaker, however.
DeLorean attorney Roger Behle of Foley Bezek Behle & Curtis said the company was looking forward to trial. Representatives for NBCU did not immediately respond to a request for comment.
The DeLorean DMC-12 sports car famously served as the time machine in the blockbuster “Back to the Future” series. Universal and Amblin Entertainment signed an agreement with DeLorean maker John DeLorean that allowed them to use DeLorean trademarks for “merchandising and commercial tie-ups” in exchange for 5% of the revenue, according to the lawsuit.
The original DeLorean Motor Co went bankrupt in 1982. Houston, Texas-based car restorer Stephen Wynne bought DeLorean’s assets in 1997.
NBCU began paying Wynne’s company, which also calls itself DeLorean Motor Co, royalties in 2020 following legal disputes between his company and John DeLorean’s estate.
Wynne’s company sued NBCU in 2022, accusing it of failing to pay the full amount of royalties owed under the agreement. The lawsuit cited tie-ins like the DeLorean’s appearances in the film “Ready Player One,” at Universal Studios theme parks, and on merchandise such as toys, posters, and lunch boxes.
Carter said on Thursday that Wynne’s company could not sue NBCU for breaking the 1989 agreement because DeLorean’s estate did not transfer the contract to the company. But the judge also said that the company may be able to show at trial that NBCU created consumer confusion and infringed its trademarks.
The case is DeLorean Motor Co v. NBCUniversal Media LLC, U.S. District Court for the Central District of California, No. 8:22-cv-02189.
For NBCU: Andrew Thomas and Todd Toral of Jenner & Block
For DeLorean: Roger Behle of Foley Bezek Behle & Curtis
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Reporting by Blake Brittain in Washington
